IPR infringement cases

Horlicks Limited And Ors. vs Kartick Sadhukan, Delhi High Court 2002 (25) PTC 126 Del

Author: Rahul Cherian

This case revolves around the principle of infringement of trademark and copyright laws. HORLICKS Limited (hereinafter referred to as H) is a foreign company engaged in manufacturing of a wide range of food products, including foods for infants, children and invalids, malted milk, biscuits, toffees, etc. under the trademark HORLICKS, of which it claims to be the original registered owner. The trademark 'HORLICKS' was registered in India in relation to foods for infants, children as well as mailed milk as early as 1943, for biscuits in 1961 and in respect of toffees in 1966. H is also the owner of copyright of HORLICKS label and is exclusively entitled to reproduce and alter the features of the HORLICKS label in any material form as it deems fit.

Kartick Confectionery (hereinafter referred to as K) started manufacturing a similar look-alike product, namely, toffees under the trademark ‘HORLIKS’ infringing the trademark rights enjoyed by 'HORLICKS'. K also reproduced the label of H thereby amounting to the infringement of the copyright of the latter.

H contended that since the consumers of the product under the trademark HORLICKS included infants, children and adults it was the obligated to ensure that the quality and standard of the product met the prescribed requirements under the law. They further stated that they ensured that the products under the trademark HORLICKS were made under strict hygienic conditions. Accordingly, if K is permitted to use the challenged trademark HORLIKS, the right of which was never granted neither permitted by H, the latter was at all times at a risk of facing the consequences of K’s conduct and unauthorized use. Hence they filed for a suit seeking to permanently restrain K from infringing the H's trademark HORLICKS and also its copyrights which it enjoyed over the product.

A Single Judge Bench of the Delhi High Court comprising of Justice B Chaturvedi found out that H was indeed the original registered owner of the trademark HORLICKS in respect of food for children, malted milk, biscuits and toffees and all other products as a result of prior marketing and registration. With regards to toffees registration was done in India in 1966. And the company carried out various advertisements of its products under the trademark HORLICKS and thereby enjoyed sufficient goodwill and reputation for its products in India. The court ruled that use of the label and trademark HORLIKS by K in respect of toffees is very likely to cause confusion among the people. It would thereby lead to deception, majorly as a result of K having copied the trademark HORLICKS and also its label as and how it appears on the products manufactured and marketed by H.

Accordingly the court restrained K from manufacturing and selling toffees or other related goods under the trademark HORLIKS or under any other name that is similar in expression to H’s trademark HORLICKS. Further the court barred K from reproducing, printing or publishing any label which was a mere reproduction or imitation of K’s HORLICKS label, thereby protecting the latter’s copyright to the label.

Novartis v. Union of India & Others, Supreme Court of India Civil Appeal No. 2706-2716 of 2013

Author: Rahul Cherian

This is a landmark case concerning whether Novartis should be granted the right to patent Glivic, an anti-leukemia drug. The legal provisions dealing with the case are sections 2(1)(j), 2(1)(ja) and section 3(d) of the Indian Patent Act, 1970 (as amended in 2005).

Novartis had filed for a patent application of its beta crystalline form of ‘imatinib mesylate’ in 1998 as per the TRIPS agreement of the World Trade Organization. However, the application for the patent filing was processed only in the year 2005 after India allowed for product patents. The authority in charge of granting patents, The Assistant Controller of Patents and Designs rejected the application of Novartis on the ground that if failed to satisfy the requirement of novelty and non-obviousness as per the Indian Patents Act, 1970.

At that time the appellate tribunal board overseeing the cases related to the patents was not in existence. Thereby Novartis filed for appeals before the Madras High Court in 2006. But before the high court could decide on the matter, the Intellectual Property Appellate Board was formed and the case was transferred thereto as per the Section 117G of the Act that provides for transfer of pending proceedings before the Appellate Board. The board deviated from the earlier decision given by the Assistant Controller of Patents and Designs and held that Novartis met the requirements of novelty and non-obviousness as per the Patents Act.  However it rejected the application on the ground that it was a mere discovery of a new form of a known substance which did not result in the  enhancement of the known efficacy of that substance and also because Novartis could not prove any significant efficacy of the drug. Thus the application was rejected by the board since Novartis failed to fulfill the requirements as per Section 3(d) of the Indian Patents Act, 1970.

Not satisfied with the ruling of the appellate board, Novartis decided to go for a proceeding before the Madras High Court with the contention that Section 3(d) of the Act was violative of Article 14 of the Indian constitution. It stated that the requirement as per the section with regards to “enhanced efficacy” was vague and gave away unrestricted power to the patent examiner, thereby leading to arbitrary control of power in the hands of the authority.  In 2007 the High Court held that the object of the Section 3(d) was to prevent intellectual monopoly privileges, also known as ‘evergreening’ by companies and further held that Novartis had the right to present the case before a court of law over the appellate board. 

Subsequently in 2009,  after the appellate board rejected the patent application, Novartis appealed directly before the Supreme Court through a special leave petition under Article 136 of the Indian constitution. It was represented in the apex court by ex-Solicitor General of India Gopal Subramaniam and senior advocate T. R. Andhyarujina. Their chief contentions were as follows:

• That the company had met the required criteria of novelty and inventive step as the compound in question, the beta crystalline form is only one polymorph of imatinib mesylate.
• That the compound in its beta crystalline form had enhanced efficacy over other variants of the same compound such as imatinib or imatinib mesylate and thereby all requirements of the section 3(d) of the Indian Patents Act, 1970 stands fulfilled.
• That sufficient research was carried out to selectively prepare the beta crystalline form of imatinib mesylate and it was worthy of being granted patent rights.

The contentions made by the Additional Solicitor General of India Paras Kuhad are as follows:

• That the beta crystalline form of the compound is neither novel nor non-obvious owing to publications about it in the ‘Cancer Research and Nature’ in 1996, and various other disclosures in Zimmerman patents and by Food and Drug Administration, U.S
• Further the requirement of efficacy as stated in section 3(d) of the Act should be held to be interpreted on lines of therapeutic efficacy and not merely one of physical efficacy.

Taking into consideration the contentions of the parties, the Supreme court held that Novartis failed to meet the requirement of novelty.  And also thereby failing to qualify for the test of invention as provided for under in section 2(1)(j) and section 2(1)(ja) of the Patents Act, 1970 as a result of the various publications and disclosures already made about the beta crystalline form of the compound, Imatinib Mesylate. Further the court decided to interpret efficacy as laid down in section 3(d) of the Act of lines of therapeutic efficacy and not merely physical efficacy. It held that though physical efficacy of imatinib mesylate in beta crystalline form is enhanced in comparison to other forms. But since there was no substantive and conclusive material and evidence to prove that beta crystalline form of imatinib mesylate will produce an enhanced or superior therapeutic efficacy, Novartis failed to meet the requirements under Section 3(d) of the Act. The Supreme Court went with the therapeutic efficacy interpretation over physical efficacy owing to the fact that the compound was of medicinal value.

Thus the decision given by a Bench of the Supreme Court, comprising of Mr. Justice Aftab Alam and Ms. Justice Ranjana Prakash Desai upheld the rejection of the patent application filed by Novartis for Glivec in 1998 before the Indian Patent Office.

Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited, Supreme Court of India (2001) 5 SCC 73

Author: Rahul Cherian

This is a case concerning the concept of similarity of a trademark in law. In this case, Cadila Healthcare Limited (hereinafter referred to as the petitioner) and Cadila Pharmaceuticals Limited (hereinafter referred to as the respondent) were both pharmaceutical companies engaged in the business of manufacture and selling of various pharmaceutical products and drugs. The two companies had taken over the business of the former Cadila Group after its restructuring under Sections 391 & 394 of the Companies Act. Both the companies got the right to use the name Cadila as part of their business and corporate existence.

The petitioner was engaged in the manufacture of a drug known as Falcigo containing Artesunate for the treatment of cerebral malaria commonly known as Falcipharum. After its introduction into the markets, the petitioner applied for its registration of trademark to Trade Marks Registry, Ahmedabad. Thereafter in the year 1996 the Drugs Controller General of India granted permission to the petitioner to market the said drug under the trademark of Falcigo. Subsequently the petitioner started selling the drug all over India.

In 1997 the respondent got the permission from the Drugs Controller General of India to manufacture a drug containing Mefloquine Hydrochloride. Further the company was also allowed to import the drug from abroad. Thereafter, in 1998 the petitioner discovered that the respondent was engaged in the business of selling the said drug under the trade mark Falcitab. Even this drug was used for the treatment of Falcipharum Malaria. The petitioner then filed a suit in the District Court at Vadodara seeking injunction against the respondent from using the trademark Falcitab and claimed that it would lead to confusion among the public, thereby causing deception.

The respondent contended that the word Falci was taken from the name of the disease Falcipharum Malaria. And moreover it was a common practice in the pharmaceutical trade to use a part of the name of the disease as a trademark to indicate to the doctors and chemists that a particular drug was meant for the treatment of a particular disease. Further the company contended that both drugs in question were Schedule L drugs which meant that they could only be sold to the hospitals and clinics. The result being that it ensured there was no room for any confusion or deception.

The Extra Assistant Judge of the District Court at Vadodara came to the conclusion that both the drugs in question differed in their appearance, chemical formulation and price. And since they could only be sold to hospitals and clinics and not to the general public, there was no chance of any deception or confusion. Hence, he dismissed the injunction application of the petitioner. Thereafter, the petitioner went for an appeal to the High Court of Gujarat. The High Court upheld the decision granted by the district court.

Then, the petitioner went for an appeal before the Supreme Court of India under Article 136 of the Constitution of India. The case was decided by a Division Bench of the court comprising of Justice B.N.Kripal, Justice D Raju and Justice B Kumar. The bench invoked the contents of Section 17-B of the Drugs and Cosmetics Act, 1940. It provides that in order to avoid confusion or deception in the market, the concerned authorities responsible for grant of trademarks under the Act should verify that trademark in question. And ensure that it is not an imitation or resemblance of a previously held trademark. Further that the applicant to the trademark should submit an official search report from the Trade Mark office pertaining to the trade mark in question.

And after taking into consideration the contentions of both the parties the division bench of the apex court held that the petitioner was right in claiming for infringement of their trademark. It ruled that since the products in question were medicinal products there was a greater risk of confusion compared to non-medicinal products. And it could have fatal and disastrous effects on the buyers. And accordingly the appeal was disposed of by the bench. 

Colgate Palmolive Co. Ltd & Another. vs. Mr. Patel & Others., Delhi High Court 2005 PTC (31) 583

Author: Rahul Cherian

This is a case relating to the legal principle of infringement of a trademark. It was decided by a Single Judge Bench of the Delhi High Court comprising of Justice M Mudgal.

Colgate Palmolive Co. Limited (hereinafter referred to as the plaintiffs) is a company that has been manufacturing and marketing dental products in India under the well-known trademark 'COLGATE' since 1937. The company undoubtedly is also an international leader in the trade of tooth paste and other dental related products. The plaintiffs registered their trademark in India in the year 1954. Since then they have always marketed their products in red cartons which had the word COLGATE inscribed in white on it. They used a particular font for printing the trademark on the cartons. Further they had even registered their label relating to colors in India in the year 1959. From then on they have been exclusively enjoying the ownership rights over the trademark 'COLGATE' and also the label containing the red and white colors inscribed on it.

In the year 2003 the plaintiffs came to know that Mr. Patel and his company(hereinafter referred to as the defendants) were using the plaintiff's COLGATE trade dress in the packaging of their products with relation to the layout and color combination of the cartons. The defendants used the word 'AJANTA' printed in white color in a red background in their cartons. Subsequently the plaintiffs filed a suit before the Delhi High Court seeking a permanent injunction against the defendants, thereby restraining them from using the trade dress that was similar in layout and appearance even though the names printed on the cartons were different.  They contended that the defendants had infringed their trademark and copyrights. And further that they were indulging in unfair competition by trying to sell their products using the brand name of trademark COLGATE.

On the other hand, the defendants contended that there was nothing distinctive in the color combination of the plaintiff's container and that the plaintiff could not have a trademark in color combination. Further they claimed that the red and white label was common to the toothpaste trade.

The Honorable Judge observed that essential feature of the plaintiffs' mark was COLGATE inscribed in white color on a red background and not merely red and white color combination alone. He held that the printing of the word ‘AJANTA’ on the defendants’ cartons in white color on a red background does not give rise to any infringement of the plaintiffs’ trade dress. Also affirmed the contention of the defendants that red was a basic color and the red & white color combination is common to the tooth paste trade in the domestic as well as the international market. Hence there cannot be any monopolization of the same by any party. However, he finally held that the defendants were liable for trying to sell their products using the brand name of COLGATE since there was sufficient resemblance between the plaintiffs' and the defendants' product. Further the court ruled that if the defendant alters the packaging there would not arise any question of infringement of the copyright and trademark of the plaintiff. Accordingly the court ordered them to substitute gold for white color in the description of ‘AJANTA’ in their cartons.

Thus, the injunction application was disposed of by the court and the defendants were permitted to market their products provided they made the required alterations in their packaging of the products.